Shahin Enterprises Pty Ltd v ExxonMobil Oil Corporation

[2002] ATMO 27

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Opposition by ExxonMobil Oil Corporation to application for extension of time by Shahin Enterprises in which to serve evidence in support in relation to 797721(4, 25, 32) – ON THE RUN.

Background

ExxonMobil Oil Corporation, (‘ExxonMobil’) of Texas in the United States of America, filed application 797721 on 18 June 1999 to register the words ON THE RUN (in plain script) as a trade mark in Classes 4, 25 and 32 of the International (Nice) Classification of Goods and Services for goods which now read:

Class: 4  

Oils and greases and other lubricants, fuels, including petrol, kerosene, liquified natural gas, petroleum gas and other petroleum products in this class, illuminants

Class: 25 

Clothing, footwear and headgear

Class: 32 

Beers, mineral and aerated waters and other non-alcoholic drinks, fruit drinks and fruit juices, syrups and other preparations for making beverages

The application had specified a wider range of goods and services; however, these were deleted to overcome various conflicting preceding trade marks and are now the subjects of divisional applications for the same trade mark made by ExxonMobil:

Number:  868823
Priority Date:             18 June 1999
Goods/Services:         Class: 16 

Paper; cardboard; greeting cards, stationery, photographs, adhesives, paint brushes, plastic materials for packaging, writing instruments, magazines, newspapers, playing cards.

Class: 29 

Meat, fish and poultry, meat extracts, preserved, dried and cooked fruits and vegetables, jellies, jams, preserves, eggs, dairy products including milk, cheese, yoghurt and cream, edible oils and fats, salad dressings and other foodstuffs in this class.

Class: 30 

Coffee, tea, cocoa, sugar, rice, flour and preparations made from cereals, bread, pastry and confectionery, ice cream and ices, honey, treacle, yeast, baking powder, salt, mustard, vinegar, sauces of all kinds, spices, crushed and other ice.

Number:  868824
Priority Date:             18 June 1999

Class: 35 

Sale of prepared food, snack food, food to be prepared, beverages and confectionery, grocery services, green grocery services, retailing and wholesaling of grocery, foodstuffs, sunglasses and eyewear, convenience stores, newsagency  services, lottery sales, ticket sales, music store services including sales of compact discs and CD Roms.

Class: 37 

Services station services for vehicles, repair and maintenance of vehicles, vehicle washing, driveway service and self-services for vehicles, dry cleaning and laundry services

Class: 39 

Travel agency and advice

Class: 40 

Photographic film development and processing

Class: 42 

Cafe, buffet, restaurant, self service food, food bar services, supply of prepared food, snack food, food to be prepared, beverages and confectionery

The application here under consideration was subsequently accepted by a delegate of the Registrar of Trade Marks and advertised as accepted in the Australian Official Journal of Trade Marks (‘the Journal’) on 28 June 2001.

On 26 September 2001, Shahin Enterprises Pty Ltd (‘Shahin’) of Woodville, South Australia, filed Notice of Opposition to the registration of the trade mark.

On 18 December 2001, Shahin filed application for extension of time within which to serve evidence in support of its opposition.  The grounds for this extension are stated as follows:

More time is required to prepare and lodge the evidence-in-support in this matter.

On 4 January 2002, ExxonMobil filed opposition to all of the extension sought by Shahin and requested a hearing of the matter of the extension.

Accordingly, the issue was set down for a hearing on 20 February 2002 before me, as a delegate of the Registrar of Trade Marks.  Mr Greg Chambers of Phillips Ormonde and Fitzpatrick appeared for ExxonMobil by videoconference link.  Mr Alun Thomas of Madderns, for Shahin, elected not to appear and has put in written submissions.  ExxonMobil has served and filed a statutory declaration by Gregory Morris Chambers in relation to the objection to the extension of time.  Shahin has not put in any evidence.

The Evidence

Greg Chambers is a patent attorney and attests to dealings between ExxonMobil and Shahin which are not relevant to these proceedings.  In short, exhibits to the declaration comprise a letter of demand from ExxonMobil and Shahin’s response to it in which the current opposition proceedings are foreshadowed by Shahin.

The Submissions

Mr Chambers commenced his submission by observing that it is unusual to object to the first extension of time and provided a summary of the history of the opposed application, similar to that which I have outlined above. 

Mr Chambers stated that my consideration of whether to grant the extension of time is governed by cases such as Vangedal-Nielson v Smith (Commissioner of Patents) (1980) 33 ALR 144; Lyons v Registrar of Trade Marks (1983) 50 ALR 496; 1 IPR 416. He submitted that the law developed from these decisions can be summarised as follows:

(a)the applicant seeking the extension of time has to make out a proper case;

(b)there must have been no undue delay on the part of the potential opponent;

(c)the private interests of the applicant and the opposition as well as the public interest are considered by ensuring that invalid rights are not granted and that proceedings are not protracted;

(d)there is a serious opposition in train.

Mr Chambers submitted that there is, therefore, an initial hurdle for an applicant to get over in an application for an extension of time.  He cited Parkhurst Pines Pty Ltd and Others v Truefeat Pty Ltd 31 IPR 157 as a precedent where an applicant for extension of time had given no reasons why the extension was necessary and the application for extension had been refused.

Mr Chambers drew my attention to the Notice of Opposition filed by Shahin and observed that there are no grounds cited in the Notice that give rise to ‘public interest’ considerations.  The grounds are drawn in the following terms:

1.      The opposed trade mark is incapable of distinguishing the applicant's goods in respect of which the opposed trade mark is sought to be registered from the goods of other persons.

2.      The registration or use of the opposed trade mark would be contrary to law.

3.      The registration or use of the opposed trade mark would be likely to deceive or cause confusion because of a connotation of the trade mark, or of a sign contained in the trade mark.

4.      The opposed trade mark is substantially identical with, or deceptively similar to, one or more trade marks whose registration in respect of similar goods or closely related services is being sought by another person, in particular Trade Mark Application No 865053.

5.      The applicant is not the owner of the opposed trade mark.

6.      The applicant neither intends to use, or authorise the use of, the trade mark, in Australia in relation to all the goods referred to in the application, nor intends to assign the trade mark to a body corporate for use by the body corporate in Australia.

7.      Registration of the opposed trade mark would prejudice the opponent in the conduct of their business,

The grounds, submitted Mr Chambers, do not disclose any public interest in the opposition since none of the grounds allege deception or confusion – any goods or services which might have given rise to allegations of deception or confusion have been divided out, because of preceding conflicting trade marks, as I have described, above. The only ground, (ground 4) which might possibly raise questions of deception and confusion is in respect of an application by Shahin, 865053, but with a priority date subsequent to that of this opposed ExxonMobil application: this ground, says Mr Chambers, does not go to a ground of opposition available under Part 5, Divison 2, of the Trade Marks Act 1995.  Therefore, Mr Chambers submitted, even was I to find that Shahin had given good reason for requiring the extension of time, there is no public interest to be served by granting it.

The relevant portions of Mr Thomas’s written submissions on behalf of Shahin are in the following terms:

The Trade Mark Examiner's Manual, Section 50, Part 3.3, suggests that up to about nine months from the date of lodging the Notice of Opposition will be available without compelling reasons and hence by inference it would appear that up to that time a trade mark opponent has a reasonable right to obtain extensions of time and particularly this first extension of time.

We note that in a considerable amount of case law in relation to extensions of time the main considerations are the rights of each of the parties and the public interest.

We think that the fact that only a first extension of time has been requested, the rights of the respective parties do not figure strongly and the most important consideration is that of the public interest.

It is important in the public interest that the Trade Marks Register not contain trade marks which are clearly not registrable and hence it is in the public interest that the trade mark opponent be given good time to prepare and lodge his evidence.

For these various reasons, therefore, we submit that the application for an extension of time to lodge evidence in support should be allowed.

We can advise that preparation of evidence is proceeding well, and it is envisaged that the evidence in support will be lodged well within the extension period currently requested.

Framework

Regulation 5.15 provides:

5.15Extension of period to serve evidence and service of further evidence

(1)A party to the opposition proceedings may apply to the Registrar:

(a)for an extension of the period for serving a copy of the evidence under regulation 5.7, 5.10 or 5.12; or

(b)for permission to serve a copy of further evidence on the other party.

(2)The Registrar may grant an application on reasonable terms specified by the Registrar.

(3)The Registrar must not grant an application unless the Registrar:

(a)is reasonably satisfied that the applicant has served a copy of the application, and of any documents accompanying the application, on the other party; and

(b)has given the parties a reasonable opportunity to make representations concerning the application; and

(c)is reasonably satisfied that:

(i)in the case of an application to which paragraph (1) (a) applies — the extension of the period for serving a copy of the evidence; and

(ii)in the case of an application to which paragraph (1) (b) applies — permission to serve a copy of further evidence;

is appropriate.

(4)For the purposes of paragraph (3) (b), the representations may be made in writing or at a hearing or by such other means as the Registrar reasonably allows.

(5)If the Registrar grants an application under paragraph (1) (b) on terms that include service of a copy of the further evidence within a specified period, a party to the opposition proceedings may apply to the Registrar for an extension of that period.

(6)        Subregulations (2), (3) and (4) apply to an application under subregulation (5).

Mr Alun Thomas, for Shahin, makes reference to The Manual of Practice and Procedure (‘the Manual’) Section 50 Part 3.3 in his submissions.  I cannot find the portion that he refers to in his submissions that suggests that up to nine months of the date of lodging Notice of Opposition will be available without compelling reasons.  There is, however, a discussion of 'administrative benchmark limits' to the accumulated time of these extensions in Section 51, Part 3.3 of the Manual which discusses when an application for extension should be accompanied by a statutory declaration that evidences the reasons for the extension.  This discussion is prefaced with the cautionary statement that, “Nonetheless, the onus remains on an applicant for an extension to make a case for the time sought”.

The benchmark limits were explained by Hearing Officer Nancarrow in Dermatech Laboratories Pty Ltd v Johnson & Johnson 49 IPR 419 at 422-3:

… an official notice appeared in the Journal of 8 May 1997 to inform applicants using the extension of time provisions, among other requirements, what constituted “reasonable terms specified by the Registrar.

A notice appearing in the Journal of both 18 and 25 November 1999 has since superseded this notice. However, for the purposes of this decision the relevant information is virtually identical. The notices indicate (in part) that:

All applicants for an extension of time are required to give a full explanation of why additional time is required.

Declaratory support for an extension of time in which to serve evidence in answer is not required until the total time allowed reaches 9 months (that is, the extensions allowed total 6 months). [It should be noted that these provisions have been revised for instances where the reason is based on negotiations, but they are not applicable here.]

After 6 months of extension has been allowed all such applications require a declaration which sets out, (1)  progress to date; (2)  an expected timetable for completion of the evidence; and (3)  compelling reasons why the additional time should be allowed.

The Office intended to facilitate the service of evidence during opposition proceedings following the introduction of the Trade Marks Act 1995 (Cth). To assist in producing this result the above examples of requirements, advertised in an official notice in the Journal of 8 May 1997, were put in place as being “reasonable terms specified by the registrar” for extensions of time made under reg 5.15. The explicit detail in the notice is not only so that applicants can benefit from a clear picture on the type of information that will be likely to produce a favourable outcome for their application, but to provide a more transparent and efficient administrative procedure for all parties. Before the notice provided information on the type of detail required, some applications merely stated that “more time is required to serve the evidence”, without any further explanation. The notice also enabled persons working in this Office to direct applicants to the type of detail that is required to justify a request for an extension of time, to enable matters to progress more quickly. On another level, this procedure enabled earlier identification of cases where one party was merely using the opposition process to delay progress by another party.

In applying the requirements of reg 5.15, several principles arise. Two of these, which share some common ground, are the “rising onus on the applicant for the extension with the passage of time” and the need for “greater detail of the circumstances” as the time extended accrues. To this end, a variety of automatically generated standard Official letters are used to provide information to both parties when an extension of time application is made. The letters may simply acknowledge receipt of the application (a clear indication that the application is deemed to have met requirements), or may request greater detail (an indication that the application requires some further clarification), or may even direct the applicant to request to be heard concerning the application (a clear indication that it has a major difficulty). The amount of information required and the level of detail concerning future action on the part of the applicant will, therefore, vary because of all kinds of factors. These may include such items as the time already allowed, the number of hands through which the evidence must pass to be finalised, whether any of the parties providing material are geographically distant from each other and, of course, the particular circumstances as described by the applicant that it claims apply to the case.

Reasons

In Vangedal, above, at 150, Bowen CJ stated:

Three months has been considered by the Parliament to be an appropriate period to allow for this. But it has been recognised that cases may occur where, for one reason or another, three months may prove insufficient. Accordingly, it has been provided that further time may be allowed not exceeding a further three months. The Commissioner is interposed as the arbiter whether such an extension should be allowed and how long it should be. Clearly, the Commissioner will have to consider the interests of the prospective opponent who, for some good reason, has not been able to mount his opposition within the initial period of three months. The Commissioner will further have to have in mind, where a serious opposition is foreshadowed, the public interest which has been mentioned, but he will have to require to be satisfied by an applicant for an extension that a proper case has been made out justifying an extension. It would be wrong if he granted an extension simply because no one had raised rather exceptional circumstances why it should not be granted. Reasons why this is so include the desirability of operating the system efficiently and without unreasonable delays and also the interests of the applicant for a patent ... [Emphasis added]

I consider that the problem confronting Shahin is that it has not given a reason or any explanation of why the extension of time is needed.  I do not think that the statement that ‘more time is required to prepare and lodge the evidence in support in this matter’ qualifies as a reason or explanation or any justification for an extension of time: it is merely the outcome which is sought without any reasons why it is necessary.  It is true that there are a number of factors which I am to consider in whether, or not, to allow the extension; the length of time already allowed impinges on this, the others being those extracted from Vandegal, above:

the applicant seeking the extension of time has to make out a proper case;

there must have been no undue delay on the part of the potential opponent;

the private interests of the applicant and the opposition as well as the public interest are considered by ensuring that invalid patents are not granted and that patent proceedings are not protracted;

there is a serious opposition in train.

However, the latter three factors, including the amount of time already allowed, are to be considered against the context of the reasons and explanation given by the party seeking the extension of time in order that the interests of the parties and any public interest might be balanced.  If there is no reason given for seeking the extension of time, such contextual consideration becomes impossible and the process would become one of surmise.

It is unusual to refuse a first request for an extension of time but it is not without precedent.  In Parkhurst Pines Pty Ltd and Others v Truefeat Pty Ltd 31 IPR 157, Hearing Officer Zars, after referring to the passage from Vandegal, above, said, at 161:

In light of the reasoning applied in the mentioned cases and in view of the above statement, I agree with Mr Bell’s contention that the opponent has failed to furnish adequate acceptable grounds for requiring the additional time, nor has it established a proper case justifying it. The opponent merely states that the time of 2 months is required for the preparation of the evidence. From the opponent’s request it is impossible to infer that the gathering of the evidence is already under way, but even if it is, any explanation is lacking why the opponent should avail itself of more time for the continuation of the process of obtaining further evidence, or its finalisation. In Lyons, supra, it was recognised that the statutory period of 3 months is generally insufficient for serving and lodging of the evidence, which frequently is a time consuming exercise involving third parties. This factor, however, does not absolve the party seeking the extension from providing at least some satisfactory reasons to enable the registrar efficient operation of the system and to avoid unnecessary delays in the proceedings.

This application by Shahin for extension of time is in terms very similar to that by Truefeat Pty Ltd, above. 

Shahin, via Mr Thomas’s written submission, has provided a general assurance that “it is envisaged that the evidence in support will be lodged well within the extension period currently requested”.  However, the explanation is not in declaratory form; I therefore have difficulty in placing any weight on it as being evidence of Shahin’s preparations of its evidence in support.  Further, had the explanation been in declaratory form, the explanation provides no reason for the delay, nor any information as to the nature of the evidence, nor the progress made by Shahin in assembling it. 

Both parties to a proceeding before the Registrar are entitled to expect predictability and certainty both in the administration of filing of evidence and in the outcome of challenges when aspects of the other party’s administration of the service and filing of evidence are contested.  It appears to me that the approach to these proceedings by Shahin has been somewhat cavalier.  In both its application for extension and subsequently, it has not appeared to consider that any explanation is required why the sought for extension is necessary and that the grant is automatic in the manner specifically cautioned against in Vangedal, above.  This approach might also be taken to reflect adversely on the seriousness with which Shahin regards this opposition.

Public Interest

Lest I be wrong in the above, I note that as none of the grounds of opposition in the Notice cite deception of confusion which might arise from the use of the opposed trade mark, any public interest that might remain for me to consider is that which arises in the orderly running of the Register of Trade Marks and in the proper administration of opposition proceedings. 

It is apparent that the public interests in these aspects are best served if extensions of time are allowed under the circumstances provided in the Act and regulations, governed by the case-law discussed above, and promulgated in the Manual and by Official Notices in the Journal.

Absent any public interest arising from a ground of alleged deception and confusion, I am not at ease with the underlying implications in Mr Thomas’s submission that it is important in the public interest that the Register of Trade Marks not contain trade marks which are clearly not registrable.  This approach does not appear to lie well with the provisions of section 33 of the Act under which it is to be presumed that trade marks are registrable. 

Decision

I refuse Shahin’s application for extension of time in which to serve evidence in support of its opposition to trade mark 797721.

Costs

ExxonMobil has requested its costs.  Shahin has not made any submission as to costs.  As ExxonMobil has been successful, I order that Shahin pay the costs of ExxonMobil in relation to these proceedings; however, I note that the declaration led by ExxonMobil is not relevant to these proceedings and thus no costs should be payable by Shahin in relation to the declaration.

Ian Thompson
Hearing Officer

25 March 2002